When Scoble says "There's a LOT of trademark infringement inside
Second Life. I see brands being attached to lots of things inside
Second Life," realize that's a non sequitur. One
very common misconception on the part of non-lawyers is that every
time you see a trademark reproduced, this is an act of infringement. That's not true.

You're actually generally free to write the words "Starbucks" and
"McDonald's" on random things in your possession. Go ahead -- have
fun. It's perfectly legal. You can even let other people see it. But just don't *sell* that stuff.

The USPTO's primer on IP law
will tell you that trademark law is about the prevention of consumer
confusion as to the source of goods or services in commerce. The
important points to see here are the requirements of use in commerce
and (for traditional TM infringement) consumer confusion as to the
source or origin of goods.

Rebecca Tushnet and Marty Schwimmer are lawyers who know trademark
law. Rebecca takes up the issues potentially faced by the alleged VW
infringers, and provides some random thoughts, with a reference to Marvel v. NCSoft:

If
individual game players create costumes that resemble
trademark-protected Marvel heroes, they haven’t engaged in use in
commerce. If individuals in Second Life deck themselves up in virtual
Versace, neither have they. But if they sell Versace to other avatars,
there is a use in commerce and then other trademark considerations come
into play...

[I]f unauthorized use of trademarks is the norm in the virtual
world,
there’s no reason to expect secondary confusion any more than primary
confusion. Trademark dilution wasn’t made for this situation. But it
might be the best fit (and indeed, might be a better application of
dilution than most).

More interesting thoughts are at her post.
The
key thing about dilution law, and why it might be especially relevant
to alleged VW infringement, is that dilution claims don't require
(according to
most courts) proof of consumer confusion. That's also why many people
think dilution doesn't make too much sense. Why create gross property rights in words? I, for one, don't have a good answer to that question. (Federal TM dilution law will likely be revised soon, btw, in ways that largely endorse the lack of sound reasoning that has always plagued dilution.) Dilution does require use in commerce, however -- so you're still free to write "Disney" and "Rolls Royce" on your toothbrushes (just don't sell them).

Marty takes up the flip side of trademark & VW questions: what
if you're a RMT-ish seller in a virtual world that permits RMT-ish sales (in Second Life, let's say) and you want to defend your
original brand for virtual pants -- is that possible? Marty says:

I think the answer is "probably" as long as it remains within Second Life's interests to defend trademarks.

Given the inability of both Rebecca and Marty to come up with quick
and easy statements, I'd say there's a good student note topic to be
had here. There are plenty of law students publishing today on topics
of virtual property, EULAs, and copyright, but I
haven't spotted anything good on trademarks yet. Maybe we'll get an
article on this after we get some real cases -- wouldn't that be an interesting twist. :-)

Btw, if you're a student writing on this and are desparate for
things to cite, my past trademark-law-related writings can be found here, here, and here -- nothing virtual world-related, though the early one on trademarks and search engines does go on a bit about the placeness of cyberspace.

Btw 2: Does Dastar have any special relevance in this area? To wit, quoting Scalia:

In sum, reading the phrase "origin of goods" in the Lanham Act in accordance with the Act's common-law foundations (which were not designed to protect originality or creativity), and in light of the copyright and patent laws (which were),
we conclude that the phrase refers to the producer of the tangible
goods that are offered for sale, and not to the author of any idea,
concept, or communication embodied in those goods. Cf. 17 U. S. C. §202
(distinguishing between a copyrighted work and "any material object in
which the work is embodied").

Comments

1.

"Just don't sell them."

Now, would that be "sell" in RMT "selling" or "sell" in virtual currency, or does it matter?

Most argue that theft in an MMO that occurs within the mechanics of the game (i.e. a "thief" character, or looting bodies) is not the same as legal "theft." I might be able to get a charge of "theft" from someone who illegally accessed my account and transferred all my stuff away, but not from the thug that ganked me in PvP.

In the same light, is trading my Versace-branded Mandalorian Armor for ingame credits "commerce," or participation in a game. (SWG doesn't cede IP ownership to the user, like SL and doesn't (overtly) support RMT.)

I'd assume that if ownership is treated more like "owning" boardwalk in a (albiet very long) game of Monopoly, then is the exchange of ingame currency for ingame property COMMERCE or simply the exchange of tokens as part of a game?

It might meet the economists definition of commerce, but will it meet the legal criteria? After all, we use the term "marriage" in MMO's, but nobody's suggesting THEY carry any real-world equivalent weight with them... I hope...

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If it doesn't count as commerce, at which point would it? On an RMT-based world like Project Entropia or Second Life? What about Everquest II's servers participating in the Station Exchange? Would they be subject to commerce laws, but those on the RMT-prohibited servers be not?

So much for trademarks, and Scoble may have just mispoken - there is a lot of copyright infringement in Second Life.

BTW, as someone who's family has been served cease-and-desist for alledged "copyright and/or trademark" infringement (for displaying Disney characters hand painted on the walls of a children's care center) - let me tell you that those lawyers are quite quick to pounce on your unsuspecting arse!

Do we so quickly forget when Paramount first got on the web and was (so, so, stupidly) shutting down Star Trek fan sites as fast as they could find them?